Appeal No. 2004-0369 Page 7
Application No. 09/822,704
both non-spherical microparticles and polymers wherein the combination of the microparticles
and the polymers results in a film-forming network.” (Brief, p. 7). But the composition of
Dupuis is a gel, a network by definition. Moreover, the gel spreads easily and is, therefore, film-
forming. Those are desirable properties which would be preserved by one of ordinary skill in the
art when adding microparticles to the composition. Appellants point no objective evidence
supporting to the contrary.
As a final point, we note that Appellants base no arguments upon objective evidence of
non-obviousness such as unexpected results. We conclude that the Examiner has established a
prima facie case of obviousness with respect to the subject matter of claims 1-3, 6-18, 20, and
22-26 which has not been sufficiently rebutted by Appellant.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-3, 6-18, 20, and 22-26
under 35 U.S.C. § 103(a) is affirmed, but the decision of the Examiner to reject claims 1-12, 24,
and 25 under 35 U.S.C. § 112, § 1 is reversed.
We denominate our affirmance as involving a new ground of rejection. 37 CFR
§ 1.196(b)(2003). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
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